Cleaning the Register: Delhi High Court Cancels ‘F1’ Trademark for Non-Use

In a recent judgment, the Delhi High Court reinforced the principle that trademarks must be actively used in the market to retain legal protection. In the case of Epifi Technologies Private Limited v. Formula One Licensing BV & Another1 C.O., the Court directed the removal of the 'F1' trademark from the Trade Marks Register, citing non-use. The judgment reinforces the principle that trademark rights must be maintained through actual and continuous commercial use.

Facts of the Case

Epifi Technologies, a leading financial technology platform recognized for its mobile banking application 'FI MONEY', initiated rectification proceedings under Sections 47 and 57 of the Trade Marks Act, 1999 against Formula One Licensing BV. The Petitioner, seeking cancellation of the ‘F1’ mark registered by Formula One Licensing BV contended that although the 'F1' mark had been registered since July 2010 on a “proposed to be used” basis, it had never been put to commercial use in India for the financial services listed under Class 36.

The Court had earlier issued notice to the respondents on February 7, 2024, and while settlement discussions were attempted, they ultimately failed. Despite being granted additional time, Formula One Licensing BV neither filed a written statement nor appeared before the Court.

The Petitioner further argued and reiterated that it had adopted the mark “FI MONEY” in 2021 and had since acquired substantial goodwill and reputation through extensive nationwide promotion and commercial use. Whereas, the respondent lacked the requisite regulatory approvals to provide financial services in India, evidencing the absence of a bona fide intention to use the mark. Moreover, the impugned mark ‘F1’ had not been used for over thirteen years for the services listed in 36. Thereafter, the Petitioner argued that the Respondent’s continued registration of the ‘F1’ mark created an unjustifiable obstacle to the registration of the Plaintiff’s own mark.

Court’s Analysis

The Court noted that the Respondent’s failure to deny the allegations effectively amounted to an admission of non-use, relying on the principle laid down in DORCO Co. Ltd. v. Durga Enterprises and Another, 2023 SCC OnLine Del 1484. The Court reiterated that when non-use is alleged and the Respondent does not specifically contest it, such allegations stand admitted.

The Court further examined the applicability of Section 47 (1)(b) of the Act, which mandates that a registered trademark is vulnerable to removal if it has not been used for a continuous period of five years prior to the filing of the rectification petition. Additionally, the Court found that the requirements of Section 47(1)(a) were satisfied, as the Respondent lacked bona fide intent to use the mark from the outset, demonstrated by the absence of necessary regulatory approvals for offering financial services.

Given the Petitioner’s established commercial presence and the Respondent’s prolonged non-use, the Court observed that the registration of the impugned mark served merely as a block on the Register, contrary to the purpose and essence of trademark law.

Decision

The Court ruled in favour of the Petitioner and removal of the 'F1' mark from the Trade Marks Register was mandated. The Court concluded:

“The petitioner has continuously and extensively been using the ‘FI MONEY’ marks since February, 2021 in India and, by virtue of their widespread advertisement and promotion, has acquired immense goodwill and reputation thereunder. On the other hand, the respondent no.1 has not made any use of the impugned mark in relation to the aforesaid services in class 36.”

It also directed the Trade Marks Registry to take necessary steps to execute the removal, ensuring compliance by forwarding a copy of the judgment to the concerned authorities.

All outstanding petitions pertaining to the matter were resolved appropriately.

Conclusion

This ruling serves as a reminder that trademark protection is contingent upon genuine, consistent use. Rights conferred by registration cannot be preserved merely as a defensive tactic. Entities seeking to retain their trademark registrations must demonstrate active commercial use aligned with the goods or services for which protection is claimed. The decision also highlights the judiciary’s commitment to ensuring that the Register of Trade Marks reflects only marks that are legitimately in commercial use and capable of distinguishing the proprietor’s goods or services from others.

References:

1. Epifi Technologies Private Limited v. Formula One Licensing BV & Anr., C.O. (COMM.IPD-TM) 20/2024 with I.A. 2914/2024 and I.A. 2915/2024

2. The Trade Marks Act, 1999, Sections 47 and 57

3. DORCO Co. Ltd. v. Durga Enterprises & Anr., 2023 SCC OnLine Del 1484